BILL DIODATO PHOTOGRAPHY, LLC v. KATE SPADE

In 2001, Bill Diodato took a photograph, shown here, of the
bottom of a bathroom stall. Through the opening underneath the
door, one can see a woman's feet, astride a toilet, in stylish,
colorful shoes, her underwear hanging above her ankles, and a
handbag resting on the floor. Diodato submitted the photograph to
defendant Kate Spade LLC ("Kate Spade") in January 2003. Although
representatives of Kate Spade deny they saw the photograph, Kate
Spade's November 2003 advertising campaign included a photograph,
shown below, of a woman's feet, astride a toilet, in stylish,
colorful shoes, with a handbag on the floor. Diodato's company, plaintiff Bill Diodato Photography, LLC
("BDP"), sued for copyright infringement and unfair competition.

Before the Court is Kate Spade's motion for summary judgment
and BDP's motion for additional discovery pursuant to
Fed.R.Civ.P. 56(f). As discussed more fully below, although the idea
of using a woman sitting on a toilet to showcase stylish shoes
and other fashion accessories is a clever one, it is an idea that
has been used often in popular culture. Hence, Diodato's
photograph contains elements that are not protected by the
copyright laws. Even assuming there was copying here, Kate
Spade's motion for summary judgment must be granted and the
complaint dismissed. In addition, for the reasons set forth
below, BDP's Rule 56(f) motion is denied.

BACKGROUND

A. Facts

The following facts are drawn from the pleadings and the
parties' motion papers and supporting materials. All conflicts in
the evidence have been resolved in favor of BDP, the party
opposing summary judgment. 1. The BDP Photograph

Diodato is a fashion accessory photographer and the principal
of BDP. (Diodato Dep. at 7-9). In late 2001, BDP was hired by the
magazine Angeleno to shoot a series of photographs featuring
fashion accessories with New York City as a central theme. (Id.
at 154-63, 167). Diodato chose to illustrate that "highly
fashionable women can be somewhat tacky," and on December 14,
2001 he photographed models in a Burger King restaurant, on
streets in New York City, and in a taxi cab. (Id. at 154,
158-61, 205). The photograph at issue here (the "BDP Photograph")
was among the photographs in the series. (Id. at 159-60).

The BDP Photograph was taken from the floor outside a bathroom
stall. (See Diodato Aff. Ex. A; id. ¶ 5).*fn1 It depicts
the bottom portion of the stall and a woman's feet in pink shoes
decorated with green, yellow, and purple leaves, with thin pink
straps criss-crossing up her legs. The woman's lime green
underpants are taut just above her ankles. A light brown handbag
rests on the floor next to the woman's left foot, and a white
toilet is visible in the background. The woman's feet are on the
floor, her heels raised at a stiff angle by the heels of her shoes. The woman's ankles are turned in, with her toes painted
red.

The BDP Photograph is taken from a distance, with the bathroom
stall and door separating the subject and the camera. Almost the
entire bottom half of the photograph consists of the light grey
lines of the floor tiles, with virtually all of the floor
out-of-focus.*fn2 The floor comes into focus halfway up the
photograph, where the woman's feet touch the ground and the
handbag sits. The photograph is framed at the top and on the left
by the darker grey of the bathroom stall and door. A light seems
to shine on the legs, toilet, and handbag, in contrast to the
shadows in the foreground and background.*fn3 The overall
tone of the photograph is whimsical, fun, and bright.

Angeleno did not run the BDP Photograph as part of the series,
and the BDP Photograph has not been published commercially.
(Diodato Dep. at 164, 176-79). It has been a part of BDP's
fashion accessory portfolio (the "Portfolio") from late 2002 to
the present and is, in one form or another, on the BDP website. (Diodato Aff. ¶ 5; Diodato Dep. 146-47; Casey Dep. at
150).

2. Interactions Between BDP and Kate Spade

Since at least late 2002, BDP has been represented by a
photography agency, Marge Casey & Associates ("MCA"). (Id. at
12, 20, 145). On January 13, 2003, MCA received a call from Kate
Spade requesting the Portfolio, among other portfolios. (Id. at
157-61). According to Margaret Casey, an owner of MCA, the
request was made by Julia Leach, Kate Spade's executive vice
president of brand strategy/creative services, or someone on
Leach's behalf. (Id. at 12, 159-60; Leach Aff. ¶ 1; see also
Diodato Aff. Ex. E).*fn4 Notes taken by an MCA employee on
an "MCA Photo Request Form" dated January 13, 2003 and referring
to BDP portfolios include "Julia Leach" written next to "Contact"
and "Kate Spade" written next to "Agency." (Id.).

On January 15, 2003, the Portfolio was sent by messenger to
Kate Spade. (Casey Dep. at 167, 183-84; Diodato Aff. Ex. E, F).
It was returned to MCA on January 22, 2003, after a Kate Spade
employee told MCA that Kate Spade liked the Portfolio and wanted
to see it again in three or four weeks when Kate Spade planned to
create concepts and shoot photographs for an advertising
campaign. (Casey Dep. at 166, 171, 175, 184; Diodato Aff. Ex. E,
F). The Portfolio was sent again to Kate Spade on February 13,
2003. (Casey Dep. at 186; Diodato Aff. Ex. E, F). While Kate
Spade had the Portfolio, Casey called to inquire whether Kate
Spade was interested in using BDP as a photographer. (Casey Dep.
at 175). Casey was told by a Kate Spade "assistant" that Kate
Spade only worked with important or well-known photographers.
(Id. at 175, 188). The Portfolio was returned to MCA on
February 24, 2003. (Id. at 187; Diodato Aff. Ex. E, F). Kate
Spade did not contact MCA or BDP further about the advertising
campaign.

3. The Kate Spade Photograph

Photographer Jessica Craig Martin was contacted by Kate Spade
in March 2003 about the company's fall 2003 advertising campaign.
(Craig Martin Aff. ¶¶ 1, 15). Craig Martin met with principals of
Kate Spade in April or May 2003, at which time Craig Martin's
portfolio was reviewed and ideas for the advertising campaign
were discussed. (Id. ¶ 16; Leach Aff. ¶¶ 2, 5, 7). It was
agreed that Kate Spade would throw a party to celebrate its tenth
anniversary and that Craig Martin would take candid,
paparazzi-style photographs at the party. (Id. ¶ 5). According
to Kate Spade, ideas for potential images were discussed at the
meeting, and Kate Spade officials referenced photographs in Craig
Martin's portfolio as exemplifying what they wanted. (Id. ¶ 7).
Among those photographs was one taken by Craig Martin in 2000
from the floor of a bathroom, featuring a side view of the feet and gold shoes of two women in bathroom
stalls (the "2000 Craig Martin Photograph"). (Id.; see Craig
Martin Aff. ¶ 8, Ex. D). In that photograph, one of the women is
wearing fishnet stockings and bright light reflects from the
women's shoes and the floor. (Id., Ex. D). The 2000 Craig
Martin Photograph has been exhibited publicly and distributed as
a postcard, and copies of the photograph have been sold. (Id.
¶¶ 10-14).

Kate Spade eventually hired Craig Martin to conceptualize and
shoot photographs for the advertising campaign. (Leach Aff. ¶ 6).
In early June 2003, Craig Martin took photographs at Kate Spade's
anniversary party at the Explorers' Club in New York City, as
planned. (Craig Martin Aff. ¶ 17). Among those was the allegedly
infringing photograph, taken in the bathroom of the Explorers'
Club (the "Kate Spade Photograph"). (Id. ¶ 18; see Compl. Ex.
C). It was among the thirty to fifty images that Kate Spade
ordered from Craig Martin after the shoot, and it ultimately was
one of the approximately fourteen photographs used in Kate
Spade's fall 2003 advertising campaign. (Craig Martin Aff. ¶ 25;
1/6/05 Martin Aff. Ex. A, B).

The Kate Spade Photograph is taken from the tiled floor in
front of a toilet. (Compl. Ex. C). A woman's legs are visible
from just below the knees; she wears purple-tinted fishnet
stockings and satin pink shoes with straps criss-crossing once around her ankle, and her light tulle petticoats fall to the
side of the toilet. A shiny, silver square handbag sits next to
her left foot. The Kate Spade Photograph is cropped close to the
woman, the toilet between her legs, and the handbag, so that
little of the surrounding area is visible, aside from square
tiles on the wall. The bottom portion of the Kate Spade
Photograph consists of smaller floor tiles, mottled in color and
texture.

&nbsp; With the exception of the extreme foreground, the floor and
other images are in focus, grounding the photograph. In addition,
there seems to be a spotlight shining on the center of the frame,
creating sharp contrasts in light.*fn5 The entire photograph
is detail-rich and textured. The purse has a metallic shine and
creases; light reflects off the bows on the satin shoes; and the
distinct patterns of the wide-net stockings and the tile floor
add energy to the photograph. The woman's feet are pointed toward
each other, her left foot is slightly raised and leaning on its
side. The image seems to be of an evening event, as the woman is
dressed in party attire and the shadows are dark. According to Kate Spade, Craig Martin created all the
photographs for the advertising campaign without direction or
instruction from Kate Spade, except that Kate Spade provided
direction as to which Kate Spade products were to appear in the
campaign. (Leach Aff. ¶ 8; Craig Martin ¶¶ 27-28). ...

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